CAFC Weekly: Week of July 22, 2011

by Orlando Lopez

August 1st, 2011

There were no precedential patent-related opinions during the preceding week; however, two precedential patent-related opinions were handed down this week. One opinion related to prosecution history estoppel (the affect of arguments during prosecution of the patent application) and the doctrine of equivalents, and the other related to the rules governing the argument of dependent claims in an appeal before the USPTO Board of Patent Appeals And Interferences (BPAI).

In Duramed Pharmaceuticals Inc. v. Paddock Laboratories Inc., Duramed owns a patent for a formulation for estrogen that includes a moisture barrier coating, where the formulation is used in hormone replacement therapy. During prosecution of the application, responding to a rejection, Duramed amended claim 1 to recite a specific moisture barrier coating and the application was allowed. Subsequently, Duramed filed suit against Paddock, alleging infringement of the patent for the estrogen formulation. The suit was based on Paddock’s Abbreviated New Drug Application (ANDA) for a generic version of a hormone replacement therapy product utilizing a moisture barrier coating which was different from the specific one recited in Duramed’s claim 1. The District Court granted Paddock’s motion for summary judgment of non-infringement, holding that Duramed’s amendment to claim 1 estopped Duramed from claiming infringement based on the doctrine of equivalents. Duramed appealed to the CAFC, which upheld the judgment of the District Court. Duramed’s argument on appeal was based on the fact that the equivalent moisture barrier coating used by Paddock was not foreseeable at the time the amendment was entered. The issue was whether, in order to be foreseeable, the barrier coating used by Paddock had to be known, at the time when Duramed made the amendment, as a barrier coating for use with estrogens rather than as a barrier coating for use in the field of pharmaceutical compositions. The CAFC held that foreseeability does not require that degree of precision in the knowledge of how to apply the known characteristic. The decision continues to clarify the effects of the Supreme Court decision in Festo.

In the opinion, In re Lovin, Lovin appealed the decision of the BPAI that upheld the examiner’s rejection of Lovin’s and others’ patent application, due to obviousness. Lovin had filed a patent application for method and system for friction welding. The examiner had rejected the claims in the application due to obviousness. During prosecution, Lovin had argued the patentability of the independent claims and did not provide separate argument for the dependent claims. Lovin appealed the rejection to the BPAI, which upheld the examiner’s rejection. Lovin appealed to the CAFC. The CAFC upheld BPAI’s decision. A principal issue in the appeal was whether Lovin, in the appeal brief, had provided arguments for the separate patentability of the dependent claims. The CAFC opinion, which delved into the deference given to an agency’s interpretation of its regulations and the effect of prior court decisions on that deference, accepted the BPAI’s interpretation of 37 CFR 41.37, which states that a statement, in an appeal brief, that merely points out what a claim recites, will not be considered an argument for patentability. The CAFC’s cited prior decision that was closest to supporting Lovin’s position, In re Beaver, was decided prior to the enactment of 37 CFR 41.37, and as the CAFC pointed out, Beaver had separately argued the dependent claims before the examiner. This opinion should be of interest to those writing appeal briefs for the BPAI and also provides cautionary advice on separately arguing the dependent claims during prosecution.